Ex Parte Chan et al

Patent Trial and Appeal Board

Feb 5, 2016

12290667 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/290,667 10/31/2008
44765 7590 02/09/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Alistair K. Chan
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
0507-006-010-000000 1957
EXAMINER
HENRY, THOMAS HAYNES
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
02/09/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISTAIR K. CHAN, RODERICK A. HYDE, JORDIN T. KARE,
and LOWELL L. WOOD, JR.
Appeal2014-000610
Application 12/290,667 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alistair K. Chan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's final decision rejecting claims 1-5 and 26-70 under
35 U.S.C. § 103(a) as being unpatentable over Cooke (US 2003/0100367
Al, pub. May 29, 2003) and Tyler (US 2007/0250119 Al, pub. Oct. 25,
2007). Claims 6-25 have been canceled. Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
According to Appellants, the real party in interest is Intellectual
Ventures LLC. Appeal Br. 2 (filed June 18, 2012).
Appeal2014-000610
Application 12/290,667
We REVERSE.
survnvIARY OF DECISION
INVENTION
Appellants' invention relates to systems and methods for stimulating a
human's vestibular system in a controlled manner. Spec. i-f 13.
Claims 1, 26, 36, 44, and 59 are independent. Independent claim 1 is
illustrative of the claimed invention and reads as follows:
1. A system for gaming, the system comprising:
a game device;
an output device in communication with the game
device;
a vestibular stimulation device configured to provide
controlled electrical current to the vestibular system of a user,
the vestibular stimulation device in communication with the
game device;
a feedback sensor device configured to detect motions
associated with the user and the feedback sensor device
providing motion information;
an input device in communication with the game device;
a game program running on the game device, the game
program configured to provide output to the output device,
receive input from the input device, receive the motion
information, and selectively provide control signals to the
vestibular stimulation device to influence the motions of the
user in response to at least one of the output or the input.
ANALYSIS
The Examiner finds that Cooke discloses most of the limitations of
independent claims 1, 26, 36, 44, and 59 but does not explicitly disclose an
"electrical current going to the vestibular system of a user." Final Act. 2-3
(citing Cooke i-fi-11, 9, 44; Figs. 1, 5). The Examiner then relies on Tyler for
"disclos[ing] tactile stimulation of the vestibular function." Id. at 3 (citing
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Appeal2014-000610
Application 12/290,667
Tyler i172). The Examiner concludes that "[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to combine
Cooke with Tyler in order to improve the realism of the game." Id. In the
Answer, the Examiner notes that Tyler expressly discloses various
embodiments including "stimulation of vestibular systems, as well as to
induce motion" and "direct stimulation of the vestibular system to affect
vestibular function." Ans. 8 (citing Tyler i-fi-178, 212, 264).
Appellants argue that "Tyler [ ] is providing tactile stimulation to
some other senses to improve performance of the vestibular function" in
order to maintain balance. Appeal Br. 5. Appellants contend that "tactile
stimulation is one that has to do with stimulation of the sense of touch," and
that "vestibular stimulation to induce motion of the user is inherently
different than stimulating a touch sense." Id. at 6. Appellants thus assert
that the Examiner has "misinterpreted and distorted Tyler in an attempt to fit
Appellants' claims," and that "the Examiner failed to establish a prima facie
case of obviousness of any appealed claim." Reply Br. 2-3.
Although we appreciate that the teachings of Tyler describe vestibular
stimulation, the Examiner has not made any findings of "a vestibular
stimulation device configured to provide controlled electrical current to the
vestibular system of a user" as set forth in each of independent claims 1, 26,
36, 44, and 59. As correctly noted by Appellants, Tyler's goal "is not to
induce motion of the user by stimulating the vestibular function, but rather to
stimulate another sense (e.g.[,] the tongue) to enhance the functioning of the
vestibular system to maintain balance, or the like." Appeal Br. 5.
Specifically, Tyler discloses that
the present invention provides a method of providing vestibular
compensation to a subject comprising conveying information to
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Appeal2014-000610
Application 12/290,667
the brain of the subject, wherein conveying information to the
brain of the subject comprises exposing the subject to sensory
stimulation provided by a stimulator placed in contact with the
subject (e.g., with the tongue of the subject), wherein the
information provides vestibular compensation to the subject.
Tyler if 78. Although Tyler discloses that the preferred location for placing
the stimulator is the tongue, Tyler also discloses that "any external or
internal surface of a body may be used, including, but not limited to, fingers,
hands, arms, feet, legs, back, abdomen, genitals, chest, neck, and face (e.g.,
forehead)." Id. if 102. However, none of the locations disclosed by Tyler
are part of the vestibular system, because Tyler discloses that the "vestibular
system refers to structures within the inner ear (the semi-circular canals) that
detect movement and changes in the position of the head." Id. if 825.
Accordingly, in contrast to the Examiner's position, Tyler fails to disclose an
"electrical current going to the vestibular system of a user." Because Tyler
does not disclose a stimulator or any other "vestibular stimulation device
configured to provide controlled electrical current to the vestibular system of
a user" as called for by each of independent claims 1, 26, 36, 44, and 59, the
Examiner's legal conclusion of obviousness is not supported by facts, and
thus, cannot stand. See In re Warner, 379 F .2d 1011, 1017 (CCP A 1967)
(holding that "[t]he legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.").
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1-5 and 26-70 under 35 U.S.C. § 103(a) as unpatentable
over Cooke and Tyler.
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Application 12/290,667
survnvIARY
The decision of the Examiner to reject claims 1-5 and 26-70 under 35
U.S.C. § 103(a) as being unpatentable over Cooke and Tyler is reversed.
REVERSED
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